Category Archives: Patents

Attorneys’ fees are generally not awarded to the winning party in a suit. However, under the patent statute1 a court may award reasonable attorney fees in “exceptional” cases. The Federal Circuit has addressed how to decide if a patent lawsuit is exceptional, and now the Supreme Court has decided to review that decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc.2

The fact that the Supreme Court is continuing to guide the Federal Circuit is more important than eventual ruling itself. The Federal Circuit has ways of applying general federal civil procedure statutes to patent lawsuits in a manner different from application to general lawsuits.

For example, the Federal Circuit created a rule based on the declaratory judgment statute3. This rule clarified when an accused patent infringer could sue a patentee for a declaration of noninfringement without having to wait for the patentee to file an infringement suit first. The Supreme Court reversed the Federal Circuit decision. While the rule was useful and made sense, the rule did not have a firm basis in the statute it was supposed to interpret.

The Supreme Court has decided that in the absence of a reason to the contrary, the Federal Circuit should not interpret federal law differently for patent cases. This guidance should help make the Federal Circuit’s decision making process more consistent with that of other federal appeals courts and provide greater certainty in interpreting general civil procedure laws in patent cases.

Inventor Unenlightened creates the ultimate in widget technology. She sells a prototype of this revolutionary device to finance its IP protection. This gadget is sure to net her company millions of dollars. Or it would have, if Inventor had not just lost all patent rights resulting from ignorance of the new patent law. The America Invents Act can also lead to the loss of your patent rights.

Sale of an invention before filing a patent application will generally bar the right to obtain a patent. Publication or other disclosure will affect rights in the United States and it will bar the right to obtain a patent in other countries.

From 1839 until March 2013, an inventor in the United States could sell or disclose an invention and have a grace period during which the inventor could still file for a patent application. This grace period is largely eliminated under the new patent law.

There are confusing exceptions to the new rules. The courts will take several years to interpret and unify their consistent application. It is a good idea to talk to your IP attorney about filing a patent application, whether provisional or non-provisional, prior to sale or disclosure of an invention.

Consult your IP attorney to protect your work before losing out like Inventor Unenlightened.

On Friday, June 29, 2012 the Federal District Court in San Jose granted a pretrial injunction prohibiting Samsung electronics from selling its new Galaxy Nexus phone. The judge ruled that Apple was likely to succeed in its patent infringement claim against Samsung’s S Voice digital assistant software. This is a major element in establishing exclusivity of Apple’s marquee feature, the “Siri” voice-automated virtual assistant. This patent relates to a key element in the implementation of “Siri.” Apple’s US Patent No. 8,086,604 describes a technique in which a phone’s computer processor searches multiple databases, and uses a heuristic function to determine relevant responses. Heuristic functions use real-life experience gained through trial and error rather than performing comparisons in a mechanical manner.

Grant of a pretrial injunction is a stunning victory for Apple. Pretrial injunctions against patent infringement are difficult to obtain, and the Supreme Court has made them even more difficult to obtain in recent years. Apple must post a $95.6 million bond to cover the possible losses of Samsung if Apple loses the lawsuit.

The week before this decision, Chicago federal court judge Richard Posner ruled that Apple could not pursue an injunction against Google’s Motorola Mobility. It is likely that the patent battles will continue at least until the technology becomes obsolete.

Companies and inventors will have to develop new systems for tracking their newly developed products and methods and for documenting them to the Patent Office. On September 16, 2011, the “America Invents Act” became our patent law. The system that, since the Patent Act of 1839, had allowed U.S. inventors great flexibility in publishing technical data and selling products before they had to file a patent application was swept away.

Small to mid-sized companies can respond to the change in the patent regime to maintain their intellectual property rights competitive position by using new strategies in preparing and filing provisional patent applications.

Novelty of an invention is a requirement for patentability under both the old and new laws. However, the definition of novelty is now quite different. Under the old law, an invention did not cease to be novel until one year after the invention was offered for sale, published by the inventor, published by someone else independently, or publicly used. This one year term was referred to as the “grace period.”

The grace period has been largely eliminated by the new law. An invention may still be novel if an inventor makes a public disclosure before filing a patent application. Rules relating to the effect on novelty of publications by others or of sales by the inventor prior to filing a patent application are not crystal clear. It will probably take the courts several years to formulate clear, consistent rules. However, if an inventor files a patent application first, the publication or the sale does not affect patentability.

It is prohibitively expensive and impractical to file a non-provisional patent application on each invention before its potential is known. Fortunately, it is not necessary. The patent law permits filing of provisional patent applications. These documents do not have formal requirements. The filing fee is low. It will be about $125.00 for a small company or individual after the Patent Office adds its new surcharge to current fees.

Provisional applications must disclose the subject matter for which the inventor desires to establish a filing date. This can usually achieved by preparing the provisional patent application as a technical paper. The inventor can write this paper in order to minimize costs. However, it is very important to consult technically qualified counsel. Inventors are often so knowledgeable that they will skip steps in the description. They can also make assumptions that need to be spelled out in a description. If details are left out, the entire purpose of the provisional patent application can be defeated.

Many strategies for cost-effective use of provisional patent applications can be developed. For example, more than one invention may be included in one provisional application. A whole system may be described, and it will not be necessary to separate descriptions of interrelated inventions in the system. Updated versions of provisional applications may be filed periodically.

While the ability to file freely may remain a dream for those who are not IBM or Microsoft, wise use of provisional patent applications will keep small to mid-sized companies in the game.

Lodsys, LLC is a “non-practicing entity.” It makes no products. Its business model is structured to earn revenue by enforcing patents against operating companies which Lodsys contends infringe upon its patents. It is enforcing a group of four patents against Apple iOS app developers. Lodsys says the claims “are directed to systems and methods for providers of products and/or services to interact with users of those products and services to gather information from those users and transmit that information to the provider.”

Lodsys has sued a number of large companies, including Adidas and Best Buy, for patent infringement. It appears that Lodsys has been sending information packages to individual developers. This package includes a patent infringement charge giving developers 21 days to respond to Lodsys’ demand that the recipient take a revenue-bearing license.

New developments in this situation continue to unfold. On May 23, 2011, Bruce Sewell, Senior Vice President & General Counsel of Apple, sent a letter to the CEO of Lodsys, LLC. Sewell wrote, “Apple requests that Lodsys immediately withdraw all notice letters sent to Apple App Makers and cease its false assertions that the App Makers’ use of licensed Apple products and services in any way constitute infringement of any Lodsys patent.”

Consultation with counsel can help a developer that has received an infringement charge to make informed business decisions regarding its position and to avoid undue harm to its business.

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